Overview of Trade Related Aspects of Intellectual Property

Rights (TRIPS) Agreement

Archana A. Jatkar

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Outline

Introduction Basic principles of TRIPS Types of Intellectual Property Rights (addressed in the

TRIPS agreement) Overview of the TRIPS agreement Institutional arrangements Public policy implications Provisions relating to developing countries Conclusion

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Introduction

Brief history of Intellectual Property Rights (IPRs) Intellectual property rights are the rights given to

persons over the creations of their minds. They usually give the creator an exclusive right over the use of his/her creation for a certain period of time

Linkage between Intellectual Property (IP) and trade: broadly through following two premises:

(I) Widespread piracy, counterfeiting and infringements of intellectual property rights constituted a barrier to trade

(II) IPRs transfer agreements

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Objectives

To reduce distortions and impediments to international trade and take into account the need to promote competent as well as adequate protection of IPRs

To ensure that measures and procedures to enforce IPRs do not themselves become barriers to legitimate trade

To reduce tensions by reaching strengthened commitment to resolve disputes on trade-related IP issues through multilateral procedures

To establish a mutually supportive relationship between the World Trade Organisation (WTO) and World Intellectual Property Organisation (WIPO)

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Basic principles: national treatment, MFN and balanced protection

Non-discrimination features prominently in TRIPS, similar to GATT and GATS,by following principles of:

National Treatment (Article 3): Equal treatment for foreign and domestic individuals and companies

Most Favoured Nation (Article 4): Equal treatment for nationals of all trading partners in the WTO

TRIPS Agreement has additional important principle: Intellectual property protection should contribute to technical innovation and transfer of technology

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Relationship between TRIPS agreement and other IP treaties

Respects the standards and complies with the multilateral conventions administered by WIPO

Incorporation of explicit provision of various conventions in WIPO into TRIPS agreement allows WTO panels to interpret them

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Acquisition and maintenance of IP

Member countries must create office and operate governmental offices for the acquisition and maintenance of IPRs

Procedures for granting and registration of IPR must be reasonable

Member country's law must provide for opposition, revocation and cancellation

Member country may adopt measures to protect public health and the public interest

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Types of IPRs:Copyright and related rights

Copyright grants exclusive rights to the creator of original scientific, artistic and literary works

‘Original’ is key in defining a work that qualifies for copyright protection

The term of protection Countries to confine limitations or exceptions to

exclusive rights to certain special cases which do not conflict with exploitation of the work and not prejudicial to right holder

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Trademark

Trademark protects any word, name, logo or device used to identify, distinguish or indicate the source of goods or services

Includes trade dress (the total image and overall appearance of a product) and product configuration (the shape if non functional)

The purpose is to safeguard the integrity of products and to prevent product confusion and unfair competition

The term of protection (initial registration and each renewal of registration of a trademark shall be for a term of no less than 7 years)

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Geographical Indications (GIs) GIs are denominations that identify a good as originating

in a region or locality, where the reputation and quality of good is essentially attributable to its geographical origin (for example: Darjeeling tea of India)

TRIPS prohibits the use of GIs in such a way as to cause deception and provides for injunctive relief, refusal of trademark registration, etc

Exceptions such as Countries are not obliged to bring a geographical indication under protection, where it has become a generic term for describing the product in question

The term of protection

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Industrial designs Protects the artistic aspect (namely, texture, pattern, shape) of

an object instead of the technical features The term of protection (amount to at least 10 years) ‘Amount to’ allow the term to be divided into two periods

(for example two periods of five years) The third party is prohibited from making, selling or

importing articles bearing a design which is a copy of the protected design, when such acts are undertaken for commercial purposes

Exception: optional mandate, if introduced then such exceptions do not unreasonably conflict with the normal exploitation of protected industrial designs and do not unreasonably prejudice the legitimate interests of the owner of the protected design

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Patents

The TRIPS Agreement requires Member countries to make patents available for any inventions, whether products or processes, in all fields of technology without discrimination, subject to novelty, inventiveness and industrial applicability

Invention to be novel,useful and non-obvious

The agreement allows countries to exclude inventions from patentability on following grounds:

Inventions necessary ‘to protect ordre public or morality; including to protect human, animal or plant life or health or to avoid serious prejudice to the environment…’

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Continued..

Diagnostic, therapeutic and surgical methods for the treatment of humans or animals

Plants and animals other than micro-organisms and essentially biological processes for the production of plants or animals other than non-biological and microbiological processes

Limited Exceptions Compulsory Licensing The term of protection (for a period of 20 years counted

from the filing date)

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Layout-designs of integrated circuits  and trade secrets

It refers to mask works (topographies) of the integrated circuits, the stencils used to etch or encode an electrical circuit on a semiconductor chip

Protection conferred to “original” layout-design/topographies

Exclusive rights include the right of reproduction and the right of importation, sale and other distribution for commercial purposes

The term of protection (ten years form the date of first commercial exploitation)

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 Protection of undisclosed information  The protection must apply to information that is secret,

that has commercial value because it is secret and that has been subject to reasonable steps to keep it secret

Trade secrets consist of formulae, patterns, process or compilation of information. (for example the formula for a sports drink)

In most countries, they are not subject to registration but are protected through laws against unfair competition

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Exhaustion of IPR

Two main competing theories: Universal or international exhaustion theory: An IPR

holder’s right are exhausted on the first sale of the protected product anywhere in the world

Domestic or territorial exhaustion theory: The right holder’s IP are not exhausted until after the first sale of the product in the territory in which he holds the rights

The resolution of exhaustion issues is left to national laws and there are are no international or customary law norms in this area

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Main feature of the agreement

Standards: The agreement expresses minimum standards of protection (I) The subject matter to be protected (II) The rights to be conferred and permissible exceptions (III) The minimum period of protection

Enforcement (I) Provisions for domestic procedure and remedies for the enforcement of the IPRs (II) Includes general principle applicable to IPR enforcement

procedure apart from administrative, civil and criminal procedure available for enforcement of rights of the right holder

Dispute settlement: The agreement further provides for the settlement of disputes over IPR among the member states within the parameters of dispute settlement procedure

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Institutional arrangements

Council for Trade Related Aspects of Intellectual Property Rights (TRIPS)

Dispute Settlement Body (DSB) Current Negotiations in special sessions (SS)

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Public policy implications

Benefits and costs of higher IP standards for developing countries

Protection of traditional knowledge and culture Biological diversity Health Food Investment and transfer of technology

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Provisions relating to developing countries

Transitional arrangements Developed countries to provide

(I) Incentives for transfer of technology to Least Developed Countries (LDCs)

(II) Technical assistance and financial support to developing countries in preparing laws and regulations on protection and

enforcements of IPRs

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Conclusion

Highly innovative agreement and remains the most comprehensive international agreement on intellectual property till date.

Overall it has worked well, however, it needs to continue to implement wide ranging provisions specially when it touches significant public policy questions